47 F.4th 262
5th Cir.2022Background
- Plaintiffs (Business Moves Consulting; Brandmixer; Curtis Bordenave; Paige Lee) own and seek federal registration of the mark THEEILOVE and have licensed its use for merchandise.
- Jackson State University has long used the phrase as its alma mater, holds state registration and common-law rights, and applied for federal registration after plaintiffs secured theirs.
- The University licenses its indicia through Collegiate Licensing Company, which authorized licensees (Anthony Lawrence Collection; Defron Fobb; Thaddeus Reed) to produce and sell University merchandise.
- Plaintiffs sued Collegiate and the licensees for Lanham Act trademark infringement and unfair competition, seeking damages and injunctive relief, but did not join Jackson State University.
- Defendants moved to dismiss under Rule 12(b)(7) for failure to join a required party (the University); the district court dismissed without prejudice under Rule 19(b); the Fifth Circuit affirmed.
- The court emphasized the University’s status as an arm of the State (sovereign immunity) and held its nonfrivolous ownership claim could be practically impaired if the suit proceeded in its absence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Jackson State University is a "required" party under Rule 19(a)(1)(B)(i) | University has no interest; plaintiffs own the federal mark | University claims state/common-law and usage-based interests; absence would practically impair its ability to protect the mark | University is a required party under Rule 19(a)(1)(B)(i) |
| If required but cannot be joined (sovereign immunity), should the case proceed or be dismissed under Rule 19(b)? | Court can proceed without the University; University can litigate later; no preclusion | Sovereign immunity bars joinder; equity and good conscience require dismissal to protect the sovereign | Dismissal is appropriate; sovereign immunity and potential prejudice weigh heavily in favor of dismissal |
| Whether Collegiate/licensees can adequately represent or protect the University’s interests (identity of interests) | Defendants are joint tortfeasors; their interests align and they can defend the case | Collegiate/licensees have overlapping but not identical interests; limited agency means they cannot fully protect ownership interests | Interests are not identical; representation by defendants is inadequate to cure the absence |
| Whether plaintiffs would have an adequate remedy if the action is dismissed | Dismissal would be futile and burdens plaintiffs; they should be permitted to proceed now | Plaintiffs can seek USPTO resolution of ownership and then sue licensees; dismissal without prejudice preserves remedies | Plaintiffs have adequate alternative remedies; this factor favors dismissal |
Key Cases Cited
- Republic of Philippines v. Pimentel, 553 U.S. 851 (U.S. 2008) (where an absent sovereign makes a nonfrivolous claim and may be injured by litigation, dismissal is required)
- Gensetix, Inc. v. Bd. of Regents of Univ. of Tex. Sys., 966 F.3d 1316 (Fed. Cir. 2020) (analyzed whether a licensee’s interests are "identical" to an owner’s; discussed and distinguished)
- A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213 (Fed. Cir. 2010) (field-of-use license yields overlapping but not identical interests for Rule 19 purposes)
- Two Shields v. Wilkinson, 790 F.3d 791 (8th Cir. 2015) (caution against assuming a litigant can serve as a proxy for an absent party without perfect identity of interests)
- Tell v. Trustees of Dartmouth Coll., 145 F.3d 417 (1st Cir. 1998) (proxy representation inappropriate where interests are not identical)
- Whiting v. Jackson State Univ., 616 F.2d 116 (5th Cir. 1980) (Jackson State is an arm of the state; sovereign-immunity context)
- Moss v. Princip, 913 F.3d 508 (5th Cir. 2019) (standard of review: abuse of discretion for Rule 19 determinations)
- HS Res., Inc. v. Wingate, 327 F.3d 432 (5th Cir. 2003) (if joinder would destroy jurisdiction, court must decide under Rule 19(b) whether to proceed or dismiss)
- Seminole Tribe of Fla. v. Florida, 517 U.S. 44 (U.S. 1996) (sovereign immunity limits judicial coercion of states)
- Dine Citizens Against Ruining Our Env’t v. Bureau of Indian Affairs, 932 F.3d 843 (9th Cir. 2019) (collects circuit authority favoring dismissal when necessary party is immune)